Ex Parte Rodriguez et al

Board of Patent Appeals and Interferences

Sep 4, 2012

11051502 (B.P.A.I. Sep. 4, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/051,502 02/03/2005 Tony F. Rodriguez 098888-1865 8994
99103 7590 09/05/2012
Foley & Lardner LLP
150 EAST GILMAN STREET
P.O. BOX 1497
MADISON, WI 53701-1497
EXAMINER
PARK, EDWARD
ART UNIT PAPER NUMBER
2624
MAIL DATE DELIVERY MODE
09/05/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TONY F. RODRIGUEZ, TRENT J. BRUNDAGE, and
STEVEN MICHAEL SHOVOLY
___________

Appeal 2009-014620
Application 11/051,502
Technology Center 2600
____________

Before DENISE M. POTHIER, ERIC B. CHEN, and JOHN A. EVANS,
Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-014620
Application 11/051,502

2
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1, 3-8, 10-19, and 29-32. Claims 20-28 have been cancelled and
claims 2 and 9 have been indicated to be allowable if rewritten in
independent form. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm-in-part.

STATEMENT OF THE CASE
Appellants’ invention relates to providing digital watermarks in image
data by embedding digital watermarks on-chip with respect to a
complementary metal-oxide semiconductor (CMOS) or charge-coupled
display (CCD) image array. (Abstract.)
Claims 1, 8, 13, and 32 are exemplary, with disputed limitations in
italics:
1. A method of introducing a steganographic component to
imagery generated by an image sensor, the image sensor includes a
plurality of pixels, wherein the plurality of pixels includes physical
characteristics, said method comprising:
providing variations in the physical characteristics of a set of
the plurality of pixels, wherein the variations are provided so as to
introduce the steganographic component during image capture; and
generating imagery with the image sensor, wherein the imagery
includes the steganographic component.

8. A CMOS imager comprising:
a plurality of pixels arranged in columns and rows, wherein
each of the pixels includes:
a photodetector;
a color filter portion; and
a microlens; and
Appeal 2009-014620
Application 11/051,502

3
a communications bus to selectively read out image data from
the plurality of pixels,
wherein the plurality of pixels includes at least a first set of
pixels, with the first set of pixels having physical properties so as to
introduce a hidden or concealed digital watermark component to
image data during image capture by the CMOS imager.

13. The CMOS imager of claim 8, wherein each of the
plurality of pixels communicates with different amplifiers, and
wherein the physical properties comprise varied gain of different
amplifiers associated with the first set of pixels.

32. An imager comprising:
a plurality of pixels arranged in columns and rows, wherein
each of the pixels includes:
a photodetector;
a color filter portion; and
a microlens; and
a communications bus to selectively read out image data from
the plurality of pixels,
wherein the plurality of pixels includes at least a first set of
pixels, with the photodetectors of the plurality of pixels having
physical properties so as to introduce a digital watermark component
to image data during image capture by the imager.

Claim 32 stands rejected under 35 U.S.C. § 102(b) as being
anticipated by Foster (U.S. Patent No. 6,643,386 B1; Nov. 4, 2003).
Claims 1, 3-6, 8, 10-12, 14, 16-19, 29, and 31 stand rejected under
35 U.S.C. § 103(a) as being obvious over Foster and Tian (U.S. Patent No.
6,968,072 B1; Nov. 22, 2005).
Appeal 2009-014620
Application 11/051,502

4
Claims 7, 13, 15, and 30
1
stand rejected under 35 U.S.C. § 103(a) as
being obvious over Foster, Tian, and Sharma (U.S. Patent No. 6,385,329 B1;
May 7, 2002).

§ 102 Rejection – Foster
We are unpersuaded by Appellants’ arguments (App. Br. 9-12; see
also Reply Br. 3-6) that Foster does not describe the limitation
“photodetector . . . with the photodetectors of the plurality of pixels having
physical properties so as to introduce a digital watermark component to
image data during image capture by the imager,” as recited in independent
claim 32.
The Examiner found that the layer 28 of Foster corresponds to the
claimed “photodetector . . . with the photodetectors of the plurality of pixels
having physical properties so as to introduce a digital watermark component
to image data during image capture by the imager.” (Ans. 4, 15; Foster,
col. 4, ll. 11-18.) In particular, the Examiner found that “the term physical
properties is equivalent to the sensor array having . . . photosensitive
elements.” (Ans. 15.) We agree with the Examiner.
Foster relates “to complementary metal oxide semiconductor (CMOS)
image sensors that use a method to permanently encode a watermark in a
video data output stream.” (Col. 1, ll. 8-11.) In one embodiment of Foster,

1
The Examiner inadvertently stated that dependent claim 30 was rejected
under 35 U.S.C. § 103(a) over Sharma and Tian. (Ans. 12.) Claim 30
depends from independent claim 16, which was rejected under 35 U.S.C.
§ 103(a) over Foster and Tian. (Ans. 5.) Accordingly, we will treat
dependent claim 30 as rejected under 35 U.S.C. § 103(a) over Foster, Tian,
and Sharma.
Appeal 2009-014620
Application 11/051,502

5
an “image sensor 26 includes one or more layers 28, which can include
conventional image sensor elements, such as a substrate, a sensor array
having pixels or photosensitive elements.” (Col. 4, ll. 10-14; Fig. 3.)
Therefore, Foster discloses the limitation of a “photodetector . . . with the
photodetectors of the plurality of pixels having physical properties so as to
introduce a digital watermark component to image data during image
capture by the imager.”
Appellants argue that there is “no discussion in Foster that would
imply – either expressly or inherently – that layer 28 (i.e., the layer that
includes a sensor or photoelements) introduces the visible logo” but
“instead, relies on filters (e.g., 32, 34, 36) and the presence or absence of
microlenses (e.g., 46, 48).” (App. Br. 10.) Similarly, Appellants argue that
“Foster does not anticipate claim 32 since it does not have one or more
photodetectors having physical properties so as to introduce a digital
watermark component to image data during image capture by the imager.”
(Reply Br. 4.)
However, Appellants’ arguments are not commensurate in scope with
claim 32. The layer 28 of Foster includes photosensitive elements (i.e.,
having the property of being sensitive or responsive to light), which is
capable of introducing a watermark to image data, and thus, discloses
“photodetectors . . . having physical properties so as to introduce a digital
watermark component.” Claim 32 also does not require the “digital
watermark component” to be formed solely by the photodetectors to the
exclusion of the color filter and the microlens.
Therefore, we agree with the Examiner that Foster describes the
limitation “photodetector . . . with the photodetectors of the plurality of
Appeal 2009-014620
Application 11/051,502

6
pixels having physical properties so as to introduce a digital watermark
component to image data during image capture by the imager.”
Accordingly, we sustain the rejection of independent claim 32 under
35 U.S.C. § 102(b).

§ 103 Rejection – Foster and Tian
Claims 1, 3-6, 8, 10-12, 14, 16, 17, and 31
We are unpersuaded by Appellants’ arguments (App. Br. 13-16; see
also Reply Br. 6-8) that the combination of Foster and Tian would not have
rendered obvious independent claim 1, which includes the limitation “so as
to introduce the steganographic component during image capture.”
The Examiner acknowledged that Foster does not disclose the
limitation “so as to introduce the steganographic component during image
capture” (Ans. 5) and therefore, relied on Tian for teaching creation of
steganographically enhanced images (Ans. 5; Tian, col. 1, ll. 15-21). The
Examiner concluded that “[i]t would have been obvious . . . to modify the
Foster reference to introduce a steganographic component of Tian, in order
to ‘hide messages inside otherwise innocuous messages in such a way that
the message reader is not even aware that a second secret message is
present.’” (Ans. 5.) We agree with the Examiner.
In one embodiment of Foster, an image 10 includes a watermark 14 in
the lower right corner of the image 10. (Col. 2, ll. 63-67; Fig. 1.)
Furthermore, the “Background” section of Tian explains that
“[s]teganography is the art and science of communicating in a way which
hides the existence of the communication” and that “[t]he goal of
steganography is to hide messages inside otherwise innocuous messages in
Appeal 2009-014620
Application 11/051,502

7
such a way that the message reader is not even aware that a second secret
message is present.” (Col. 1, ll. 15-21.)
Combining Foster with Tian is no more than the simple substitution of
the steganographically enhanced image in the form of a secret message of
Tian for the watermark 14 of Foster, with no unexpected results. See KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Therefore, we agree
with the Examiner (Ans. 5) that substituting the secret message of Tian for
the watermark 14 of Foster would have been obvious.
Appellants argue that “the cited Tian passage (Col. 1, lines 53-62) is
incompatible with introducing steganography during image capture since it
acts upon an already captured or otherwise provided image.” (App. Br. 14.)
However, the Examiner cited Tian for the general teaching that
steganography is well-known, rather than the process of creating the
steganographic image. (Ans. 5.) We also disagree that introducing a
stenographic component based on Tian’s teachings during Foster’s image
capturing would somehow be incompatible.
Appellants also argue that “[t]he Foster patent and the Tian patent are
incompatible; indeed, there does not appear to be sufficient ‘interrelated
teachings of multiple patents’ to support the combination.” (App. Br. 15;
see also Reply Br. 7-8.) Similarly, Appellants argue that “Foster teaches
away from combining its disclosure with a steganographic technique (e.g.,
Tian)” (App. Br. 15) because “Foster’s logo is visible and discernable for all
to see” and “[s]uch visibility requirements teach away from combining with
a steganographic (e.g., hidden) component as in Tian” (App. Br. 16).
However, as discussed previously, Tian is cited for the general teaching that
steganography is well-known method of communicating using hidden
Appeal 2009-014620
Application 11/051,502

8
messages. Furthermore, the combination of Foster and Tian is based on the
simple substitution of one known element for another, with no unexpected
results.
Thus, we agree with the Examiner that the combination of Foster and
Tian would have rendered obvious independent claim 1, which includes the
limitation “so as to introduce the steganographic component during image
capture.”
Accordingly, we sustain the rejection of independent claim 1 under 35
U.S.C. § 103(a). Claims 3-6 depend from claim 1, and Appellants have not
presented any additional substantive arguments with respect to these claims.
Therefore, we sustain the rejection of claims 3-6 under 35 U.S.C. § 103(a),
for the same reasons discussed with respect to independent claim 1.
Independent claims 8, 16, and 31 recite limitations similar to those
discussed with respect to independent claim 1, and Appellants have not
presented any additional substantive arguments with respect to these claims.
We sustain the rejection of claims 8, 16, and 31, as well as claims 10-12, 14,
and 17, which depend from claims 8 and 16, for the same reasons discussed
with respect to claim 1.

Claim 18
We are unpersuaded by Appellants’ arguments (App. Br. 18; see also
Reply Br. 8-9) that the combination of Foster and Tian would not have
rendered obvious dependent claim 18, which includes the limitation
“wherein the adjusting adjusts only red color values.”
The Examiner found that the first mask of Foster that forms colors
corresponds to the claim limitation “wherein the adjusting adjusts only red
Appeal 2009-014620
Application 11/051,502

9
color values.” (Ans. 9, 21; Foster, col. 4, ll. 49-52.) We agree with the
Examiner.
Foster explains that the watermark 18 includes colors 20, 22, 24 that
can either be different colors (col. 3, ll. 11-12; Fig. 2) or the same color
(col. 3, ll. 10-12). Foster further explains that “a different photo mask can
be sequentially used for each color (e.g., a first mask is used to form the red
color filters, a second mask is used to form the blue color filters, etc.).”
(Col. 4, ll. 49-52.) Therefore, Foster teaches the limitation “wherein the
adjusting adjusts only red color values.”
Appellants argue that “the above cited Foster sections discusses
multiple color filters, and not adjusting only red color values to introduce a
hidden or concealed digital watermark into captured image data.” (App.
Br. 18; see also Reply Br. 9.) However, as discussed previously, Foster also
teaches and suggests that the watermark 18 can be a single color (e.g., red).
Thus, we agree with the Examiner that the combination of Foster and
Tian would have rendered obvious dependent claim 18, which includes the
limitation “wherein the adjusting adjusts only red color values.”
Accordingly, we sustain the rejection of dependent claim 18 under 35
U.S.C. § 103(a).

Claim 19
We are unpersuaded by Appellants’ arguments (App. Br. 19; see also
Reply Br. 9) that the combination of Foster and Tian would not have
rendered obvious dependent claim 19, which includes the limitation
“wherein the adjusting weights a watermark signal across red, blue and
green channels.”
Appeal 2009-014620
Application 11/051,502

10
The Examiner found that the Red, Green, Blue (RGB) color filter
pattern of Foster corresponds to the claim limitation “wherein the adjusting
weights a watermark signal across red, blue and green channels.” (Ans. 9-
10, 22; Foster, col. 4, ll. 56-58.) We agree with the Examiner.
Foster explains that the watermark 18 includes colors 20, 22, 24 such
that portions of the watermark 18 have a “different luminance (e.g.,
brightness or darkness) relative to each other or relative to the image data.”
(Col. 3, ll. 15-17.) Foster further explains that “an RGB color filter pattern
can have a conventional Red, Green, Blue arrangement in one region.”
(Col. 4, ll. 56-58.) Because the RGB color filter pattern of Foster produces
different colors (e.g., red, green, blue) with a different luminance, Foster
teaches the limitation “wherein the adjusting weights a watermark signal
across red, blue and green channels.”
Appellants argue that although Foster “discusses an RGB color filter
pattern, there is no discussion of weighting a watermark signal across red,
blue and green channels.” (App. Br. 19; see also Reply Br. 9.) However, as
discussed previously, the watermark 18 of Foster includes colors 20, 22, 24
having different shades or luminance and thus, Foster teaches “wherein the
adjusting weights a watermark signal across red, blue and green channels.”
Thus, we agree with the Examiner that the combination of Foster and
Tian would have rendered obvious dependent claim 19, which includes the
limitation “wherein the adjusting weights a watermark signal across red,
blue and green channels.”
Accordingly, we sustain the rejection of dependent claim 19 under 35
U.S.C. § 103(a).

Appeal 2009-014620
Application 11/051,502

11
Claim 29
We are unpersuaded by Appellants’ arguments (App. Br. 19-20; see
also Reply Br. 10) that the combination of Foster and Tian would not have
rendered obvious dependent claim 29, which includes the limitation “the
digital watermark message component being based on information received
from the RAM or the chip interface.”
The Examiner acknowledged that Foster does not disclose the
limitation “the digital watermark message component being based on
information received from the RAM or the chip interface” (Ans. 10) and
therefore, relied on Tian for teaching a watermark image that is stored in
memory for insertion into an image (Ans. 10-11, 22; Tian, col. 8, ll. 12-15).
The Examiner concluded that
[i]t would have been obvious . . . to modify the Foster
reference to comprise a random access memory and chip
interface of Tian, in order to “increase processing speeds by
integrating all components” and reduce expenses by eliminating
the “addition of software” and the need for “multi-chip, multi-
component devices.”
(Ans. 10-11.) We agree with the Examiner.
Tian explains that memory circuits 26, 28, 29 and image modification
circuitry 14 are formed on the same substrate as a digital sensor array 11
(i.e., a system-on-chip or “SOC” architecture). (Col. 6, ll. 15-22.) “Such an
SOC architecture is advantageous because it increases processing speeds by
integrating all components on a single substrate.” (Col. 6, ll. 22-24.) Tian
further explains that a “depicted symbol 50 will be inserted into an image as
a watermark” (col. 7, l. 67 to col. 8, l. 1) that can be stored in memory prior
to insertion on an image (col. 8, ll. 12-15). Therefore, Tian teaches the
Appeal 2009-014620
Application 11/051,502

12
limitation “the digital watermark message component being based on
information received from the RAM or the chip interface.”
A person of ordinary skill in the art at the time of the invention would
have recognized that incorporating the system-on-chip (SOC) architecture of
Tian, including storage of a watermark in memory, with the image sensor of
Foster would improve Foster by providing the advantage of increases
processing speeds by integrating all components on a single substrate. See
KSR, 550 U.S. at 417. Thus, we agree with the Examiner (Ans. 10-11) that
modifying Foster to include the SOC architecture of Tian, including storage
of a watermark in memory, with Foster would have been obvious.
Appellants argue that “[t]he result of claim 29 would be to introduce
both the first digital watermark component (claim 8) and the second digital
watermark component (claim 29) into imagery” however, “[t]here is no
discussion in the final Office Action as to how or why such digital
watermark component layering would be obvious in view of the proposed
combination.” (App. Br. 20; see also Reply Br. 10.) However, these
arguments are not commensurate in scope with claim 29, because the claim
does not require “digital component layering.” Furthermore, the image 10 of
Foster includes a watermark 14 in the lower right corner of the image 10
(i.e., the claimed “digital watermark component”) (col. 2, ll. 63-67; Fig. 1)
and Tian explains that steganography is well-known (i.e., the claim
limitation “hidden or concealed”) (col. 1, ll. 15-21). Tian also explains that
the depicted symbol 50 is inserted into an image as a watermark (i.e., the
claimed “the digital watermark message component”). (Col. 7, l. 67 to
col. 8, l. 1.)
Appeal 2009-014620
Application 11/051,502

13
Thus, we agree with the Examiner that the combination of Foster and
Tian would have rendered obvious dependent claim 29, which includes the
limitation “the digital watermark message component being based on
information received from the RAM or the chip interface.”
Accordingly, we sustain the rejection of dependent claim 29 under 35
U.S.C. § 103(a).

§ 103 Rejection – Foster, Tian, and Sharma
Claim 13
We are persuaded by Appellants’ arguments (App. Br. 23-24; see also
Reply Br. 11-12) that the combination of Foster, Tian, and Sharma would
not have rendered obvious dependent claim 13, which includes the limitation
“wherein each of the plurality of pixels communicates with different
amplifiers, and wherein the physical properties comprise varied gain of
different amplifiers associated with the first set of pixels.”
The Examiner acknowledged that the combination of Foster and Tian
does not disclose the limitation “wherein each of the plurality of pixels
communicates with different amplifiers, and wherein the physical properties
comprise varied gain of different amplifiers associated with the first set of
pixels” and therefore, relied on Sharma. (Ans. 13, 25.) In particular, the
Examiner found that “Sharma teaches communication with different
amplifiers, and wherein the physical properties comprise varied gain of
different amplifiers associated with the first set of pixels.” (Ans. 13.) We
do not agree.
Sharma relates to digital watermarks, in particular, “to encoding and
decoding auxiliary information in media signals, such as images, audio and
Appeal 2009-014620
Application 11/051,502

14
video.” (Col. 1, ll. 9-11.) In one embodiment of Sharma, “[g]ain control is
used to adjust the intensity of the watermark signal.” (Col. 4, ll. 30-31.)
However, the Examiner has provided insufficient evidence or fact finding to
establish that Sharma teaches the limitation “wherein each of the plurality of
pixels communicates with different amplifiers” when Sharma is silent
regarding using gain control (i.e., amplifiers) to control individual pixels of a
watermark.
Thus, we do not agree with the Examiner that the combination of
Foster, Tian, and Sharma would have rendered obvious dependent claim 13,
which includes the limitation “wherein each of the plurality of pixels
communicates with different amplifiers, and wherein the physical properties
comprise varied gain of different amplifiers associated with the first set of
pixels.”
Accordingly, we do not sustain the rejection of dependent claim 13
under 35 U.S.C. § 103(a).

Claims 7 and 15
We are unpersuaded by Appellants’ arguments (App. Br. 22-23; see
also Reply Br. 11) that the combination of Foster, Tian, and Sharma would
not have rendered obvious dependent claim 15, which includes the limitation
“wherein the hidden or concealed digital watermark component comprises
an orientation component.”
The Examiner acknowledged that the combination of Foster and Tian
does not disclose the limitation “wherein the hidden or concealed digital
watermark component comprises an orientation component” (Ans. 13) and
therefore, relied on Sharma for teaching an auxiliary signal in a media signal
Appeal 2009-014620
Application 11/051,502

15
that determines orientation (Ans. 13-14, 24; Sharma, col. 1, ll. 50-52). The
Examiner concluded that “[i]t would have been obvious . . . to modify the
Foster with Tian combination to utilize an orientation component [of
Sharma], in order ‘to determine orientation of the auxiliary signal’ in order
to assist in locating the steganographic watermark.” (Ans. 14 (citation
omitted).) We agree with the Examiner.
As discussed previously, Sharma relates to digital watermarks, in
particular, “to encoding and decoding auxiliary information in media signals,
such as images, audio and video.” (Col. 1, ll. 9-11.) “The auxiliary signal
includes a signal used to determine orientation of the auxiliary signal called
the watermark orientation signal.” (Col. 1, ll. 50-52.) Therefore, Sharma
teaches the limitation “wherein the hidden or concealed digital watermark
component comprises an orientation component.”
A person of ordinary skill in the art at the time of the invention would
have recognized that incorporating the auxiliary information of Sharma,
including the orientation signal, with Foster and Tian would provide the
ability to determine the orientation of the watermark. See KSR, 550 U.S. at
417. Thus, we agree with the Examiner (Ans. 14) that modifying Foster and
Tian to include the watermark orientation signal of Sharma would have been
obvious.
Appellants argue that “Sharma’s techniques must be performed after
the media signal has already been captured.” (App. Br. 22.) However, the
Examiner cited Sharma for teaching that an auxiliary signal for determining
orientation is well-known, rather than the method of Sharma for encoding
and decoding auxiliary information in media signals. (Ans. 13-14, 24.)
Appeal 2009-014620
Application 11/051,502

16
Thus, we agree with the Examiner that the combination of Foster,
Tian, and Sharma would have rendered obvious dependent claim 15, which
includes the limitation “wherein the hidden or concealed digital watermark
component comprises an orientation component.”
Accordingly, we sustain the rejection of dependent claim 15 under 35
U.S.C. § 103(a).
Dependent claim 7 recites limitations similar to those discussed with
respect to dependent claim 15, and Appellants have not presented any
additional substantive arguments with respect to this claim. We sustain the
rejection of claim 7 for the same reasons discussed with respect to claim 15.

Claim 30
Appellants have not presented any arguments with respect to the
rejection of dependent claim 30 under 35 U.S.C. § 103(a). Accordingly, any
such arguments are deemed to be waived.

DECISION
The Examiner’s decision to reject claims 1, 3-8, 10-12, 14-19, and
29-32 is affirmed. However, The Examiner’s decision to reject claims 13 is
reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

babc